START-UP TRADEMARK OPPOSITION POLICY

DECISION

RARE Hospitality Management Inc. v. Cambridge

Claim Number: FA0204000112431

PARTIES

Complainant is RARE Hospitality Management Inc., Atlanta, GA (“Complainant”) represented by David M. Maxwell, of Alston & Bird L.L.P.  Respondent is Cambridge, Miami, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <rare.biz>, registered with IHoldings.com, Inc. d/b/a DotRegistrar.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.

On May 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 30, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 27, 2002  pursuant to STOP Rule 6(b), the Forum appointed James A. Crary as the single Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <rare.biz> domain name is identical to Complainant’s RARE mark.

Respondent has no rights or legitimate interests in the <rare.biz> domain name. 

Respondent registered the <rare.biz> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns and operates approximately 199 restaurants in over twenty-five states.  Complainant has used the RARE service mark in association with its restaurants and services since at least September, 11 1996.  Complainant exclusively uses the RARE mark for restaurant services. 

Respondent registered the <rare.biz> domain name on March 27, 2002.  Complainant has been unable to uncover any evidence of preparations by Respondent to use the domain name.  Complainant’s investigation revealed Respondent’s true identity as being DomainCollection.com, which is a company in the business of selling domain names.  Complainant found that typing a search at <domaincollection.com> for the <rare.biz> domain name leads to an order form that would provide a price quote for <rare.biz>.  Also, on the WHOIS registration form Respondent stated “This Domain Name Is For Sale.”

DISCUSSION

Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

In the current matter, there are no further IP Claims for the Panel to consider.

Complainant’s Rights in the Mark

Complainant has established common law rights in the RARE service mark through substantial continuous use of the mark in the restaurant industry.  See Crazy Creek Prods., Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002) (finding that the Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating its common law rights in the CRAZY CREEK mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark FISHTECH which it has used since 1982).

Respondent’s <rare.biz> domain name contains Complainant’s RARE mark in its entirety.  But for the inconsequential addition of “.biz,” Respondent’s domain name is identical to Complainant’s mark. 

Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and Respondent’s failure to respond, the Panel may presume Respondent has no such rights or interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant.  See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

There is no evidence on the record and Respondent has not come forward to offer any evidence that it holds rights in a mark identical to <rare.biz>.  Therefore, Respondent has no rights or legitimate interests in the <rare.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).  See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name).

Complainant asserts that Respondent is not Cambridge but actually DomainCollection.com.  In the absence of a contrary claim, the Panel will accept this assertion as true.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).  The administrative contact address on the WHOIS registration form states “This Domain Name Is For Sale.”  It can be inferred that Respondent registered the domain name principally for the purpose of selling it to Complainant.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to STOP Policy ¶ 4(c)(ii).  See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).

The evidence shows that Respondent registered the domain name under the name Cambridge but is actually DomainCollection.com; there is no evidence and Respondent has not offered any evidence that it is known as RARE or <rare.biz>.  Therefore, Respondent has not met the requirements of STOP Policy ¶ 4(c)(iii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Upon registering the <rare.biz> domain name, Respondent was aware that Complainant held rights in the RARE mark due to the STOP “IP Claim” notification procedure.  Registration of a domain name containing a mark of another with knowledge of the other’s rights constitutes bad faith pursuant to STOP Policy ¶ 4(a)(iii).  See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim.  Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”).

Respondent provided, as it’s administrative address, “This Domain Name Is For Sale” when it registered the disputed domain name.  This shows intent to sell the disputed domain name to Complainant.  Hence, Respondent’s registration of <rare.biz> constitutes bad faith pursuant to STOP Policy ¶ 4(b)(i).  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”).

The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the STOP Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <rare.biz> domain name be TRANSFERRED from Respondent to Complainant.  Furthermore, subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted because there are no further IP Claims.

James A. Crary, Panelist

Dated: July 5, 2002

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